Alan B. Bennett, Ph.D.Executive Director, Public Intellectual Property Resource for Agriculture

Anatomy of an Intellectual Property Policy

An IP Policy provides the framework tostrategically manage IP

Integrates institutional mission with national laws and international treaties

Provides clarity for researchers and privatecompanies

� Universities may elect title to inventions developed through

Federal funding

� Universities must file patents on inventions they elect

� University must have written agreements with faculty and

staff requiring disclosure and assignment of inventions

� University must share a portion of revenue with inventors

� Excess revenue must support research and education

� Government retains non-exclusive license to the invention

� Government retains march-in rights

� Requirement for substantial US manufacture

BayhBayh--Dole ActDole Act

National legal frameworks

UC Patent PolicyUC Patent Policy

� Mandatory Invention Disclosure

� Inventor Assignment of Title to UC

� Distribution of Net Income*

- Inventor Receives 35%

- Campus Research Fund Receives 15%

- Remaining 50% to General Pool at Inventor’s

Campus/Lab

Establishing an IP (intellectual property) policy is necessary for several important reasons.

IP rights, including patents, copyrights, trademarks, and industrial property rights attach

to research, administrative, and scholarly (including course- ware) work products.

Therefore, any public sector institution entering into research contracts with private

sector entities will encounter IP issues.

Remember that it is too late to begin formulating IP policy when negotiations about IP

have already begun. As Lita Nelsen, Director of the Massachusetts Institute of Technology

(M.I.T.) Licensing Office, observes, “Although policies will change over time as the program

evolves, the major issues must be decided in advance. Otherwise, a new program is likely

to stall or fail altogether in an entangled committee indecision and policy ambiguity.”

Matching the mission to IP policy

What are the institutional objectives?To disseminate knowledge by publication onlyTo be a technology transfer “engine”To support regional economic developmentOr some mix of all of the above

Example - CIMMYT

Mission: CIMMYT applies science and partnerships to

improve the productivity and profitability of farming

systems and sustain natural resources in developing countries

CIMMYT IP POLICY

In seeking intellectual property rights, CIMMYT will be guided by its commitment to serve

the resource poor, rather than by opportunities to obtain recurring revenues. To the

extent that financial returns are generated via intellectual property, they will be used

by CIMMYT to support its efforts to implement the FAO Global Plan for the Conservation

and Sustainable Utilization of Agriculture, adopted by 150 countries in 1996.

Main components of an IP policy

1. Ownership

2. Obligations of researchers/employees

3. Obligations of the institutions

4. Administering the IP policy

Main components of an IP policy

1.Ownership

• inventor/author owns

• university owns

• company providing research funds owns

• government providing research funds owns

• public domain, that is, no one owns

Main components of an IP policy

2. Obligations of researchers/employees

• obligation to disclose before publication

• assignment ownership to employer/institution

• obligation to assist in evaluation and patenting

• obligation to report conflict of interest

Main components of an IP policy

3. Obligations of the institution

• obligation to manage IP effectively

• obligation to pay patenting costs

• obligation to share revenue (or not)

• obligation to:support maximum public benefitmaximize revenueensure broad access for research

Main components of an IP policy

3. Obligations of the institution

• obligation to manage IP effectively

• obligation to pay patenting costs

• obligation to share revenue (or not)

• obligation to:support maximum public benefitmaximize revenueensure broad access for research

Main components of an IP policy

4. Administering the IP policy

• who is responsibleVP researchProvostDean etc…..

In most institutions the IP policy should be developed in consultation with researchers, faculty senate or other bodies to be accepted

What are the steps• Articulating the institutional mission (leadership)• Making the policy comprehensible to the reader • Providing incentives for participants • Establishing IP management as a service• Applying the policy with consistency • Showcasing the benefits

Developing and “deploying” an IP policy